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Intention to Abandon Negated by IP-Nullifying Force Majeure


Charles E. Bruzga

A patent applicant successfully argued a theory of the IP-nullifying effect of a force majeure in a petition to revive a patent application that became abandoned for failure to respond to an Office Action. The force majeure precluded a meaningful market in the U.S. for the invention and thus rendered any patent protection meaningless, so that applicant’s non-response to the Office Action did not intentionally abandon any meaningful patent protection. When the basis for the force majeure apparently ended, the applicant successfully revived the patent application.

Full details of the successful argument, in an apparent case of first impression handled by the present author, are contained in U.S. Application of S. Piperidis, No. 10/537,183 (now U.S. Patent 7,866,842), available from the U.S. Patent and Trademark Office website, www.uspto.gov, under the Public Pair portal to the Image File Wrapper of the foregoing patent. Practitioners before the U.S. Patent and Trademark Office preparing petitions to revive an abandoned patent application, under 37 CFR § 1.137(b), or to revive an abandoned trademark application, under 37 CFR § 2.66, should consider whether a force majeure occurred in similar circumstances.

Facts re abandonment in Application of S. Piperidis, No. 10/537,183

The facts concerning abandonment of U.S. Application of S. Piperidis, No. 10/537,183, were as follows. The application became abandoned when a 2006 Office Action was not responded to within six months, resulting in abandonment of the application under 35 U.S.C. § 133. Applicant decided not to respond to the Office Action due to the patent-nullifying effect of an Underwriters Laboratory (UL) decision to refuse safety certification of the invention. More specifically, Applicant testified in a declaration that: “As discussed above, [non-response] is because the potential property right was, for practical purposes, eviscerated by UL’s refusal in 2006 to certify the safety of the [inventive] reflector.”  In support of this statement, Applicant testified that without a UL safety certification, the market for the invention was far too miniscule to engender the exclusionary power of a patent.

But for UL’s intervening patent-nullifying decision, Applicant wanted to pursue the present application and to timely respond to the mentioned 2006 Office Action. Substantiating Applicant’s desire to pursue the present application were the following facts:

  1. Applicant believed that the claims of the subject application were patentable over the prior art cited in the 2006 Office Action and were of adequate scope to justify the expense of pursuing the application.
  2. Applicant believed that the market demand for the invention was consistently strong throughout all relevant time periods, that is, including the period from the 2006 date of the Office Action to which a response was not timely filed, and continuing through the filing of the 2009 petition to revive the subject application.
  3. At all relevant times as just mentioned, Applicant was ready, able and willing to pay for pursuing the subject application but for the intervening patent-nullifying decision of Underwriters Laboratory.

Spurring the Applicant’s desire to revive the application in 2009 was the fact that, by then, it had serendipitously determined that sales of the invention outside of the U.S.A. had resulted in sufficient safety data to enable it to re-approach Underwriters Laboratory and seek a favorable decision on safety certification.

Patent Office Initial Refusal to Revive Application

            The Patent Office initially refused to revive the application, taking the position that “[a] delay resulting from a deliberately chosen course of action on the part of the applicant is not an “unintentional” delay within the meaning of 37 CFR § 1.137(b).” PTO Decision on Petition dated July 17, 2009 (hereinafter, “Initial Decision”). In support of this position, the Patent Office cited In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989) for the proposition that: “Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of  37 CFR § 1.137(b).” Initial Decision. The Patent Office also cited In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988), for the proposition that “[a]n intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken.”

Applicant’s Successful Renewed Petition to Revive

The gist of the Applicant’s successful petition to revive the application is represented in the following table, which was presented in its renewed petition. The first category (1) of the table relates to an applicant’s decision not to respond based on an (unreasonable) mistake concerning patentability of the claims, and is based on In re Application of G, 11 USPQ2d 1378 (Comm’r Pat. 1989) and In re Maldague, 10 USPQ2d 1477 (Comm’r Pat. 1988), cited in the Initial Decision on Petition.  With such decisions not to respond to an office action based on a conscious determination of lack of patentability, Applicant argued that such actions logically support the inference of intent to abandon an application.

 

Jumping to the third category (3) in the above table, consider an applicant being held at gunpoint on the last day to respond to an office action. The applicant decides (deliberately) not to respond to the office action since his life will be jeopardized if he takes actions to respond to the office action. While applicant’s course of action was clearly a consciously (i.e., deliberately) chosen course of action, it would be illogical in this category to infer from this fact alone that applicant possessed the intent to abandon the application.

Applicant also dealt point-by-point with other reasons raised in the Initial Decision, essentially as follows, with the Patent Office’s other reasons for holding a delay to be intentional reproduced in bold:

  1. “[A] conclusion that * * * the invention lacks sufficient commercial value to justify continued prosecution.” In fact, Applicant was well-aware during all relevant time periods involved, that is, from before the 2006 Office Action to which a response was not timely filed, continuing through the filing of the 2009 petition to revive the subject application, that the market demand for the invention had remained strong, and therefore the invention possessed sufficient commercial value to justify continued prosecution. In fact, Applicant was ready, able and willing to timely respond to the outstanding 2006 Office Action but for UL’s intervening patent-nullifying force majeure decision.
  2. “[A]n applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office Action.”  In fact, Applicant did consider the claims be patentable over the references relied on in the 2006 Office Action.
  3. “[T]he applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.”  In fact, Applicant did consider the probable claims that would be allowed to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.
  4. “[T]he applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining a patent.” In fact, Applicant did consider the probable claims that would be allowed to be of sufficient breadth or scope to justify the financial expense of obtaining a patent.
  5. “[T]he applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining a patent.” In fact, Applicant did consider the probable claims that would be allowed to be of sufficient value to maintain an interest in obtaining a patent.
  6. “[T]he applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.”  In fact, Applicant was ready, able and willing to timely pay patent fees and patent prosecution expenses but for UL’s intervening patent-nullifying force majeure decision.
  7. “[A] change in circumstances that occurred subsequent to the abandonment of an application does not render “unintentional” the delay resulting from a previous deliberate decision to permit an application to be abandoned. It is true that Applicant made the “serendipitous” determination that sales of the invention outside of the U.S.A. had resulted in sufficient safety data in 2009 to enable it to re-approach Underwriters Laboratory and to seek a favorable decision on safety certification. However, the foregoing concern of the Patent Office relating to a “change of circumstances” arises only after a finding that abandonment of the application was intentional. Because this renewed Petition to Revive Application showed that the application was abandoned unintentionally, there is no need to reach the “change of circumstances” issue.

Conclusion

            Revival of an abandoned U.S. patent or trademark application may be available to an applicant when a force majeure renders the intellectual property (IP) meaningless by foreclosing the U.S. market for commercial exploitation of the IP.

© 2012 Bruzga & Associates